European IP Bulletin, Issue 27

Overview


Hot Topics

1. House of Lords Clarifies Novelty in Synthon v Smithkline Beecham PLC

The judgment of the House of Lords in the case of Synthon v Smithkline Beecham Plc clarifies when an invention can be considered new and patentable within the UK Patent Act 1977. In the leading decision for the House of Lords, Lord Hoffman stated that both “disclosure” and “enablement” are distinct concepts, each of which has to be satisfied before a patent can be held as anticipated and invalid.

Copyright

2. Campbell v MGN: Naomi Campbell Wins Again

Campbell v MGN Limited is the latest appeal in the action brought by Naomi Campbell against the publishers of the Daily Mirror for breach of confidence over the publication of information relating to her treatment for drug addiction. This case is the first occasion where the House of Lords have considered the consequences of the Conditional Fee Agreement regime as it relates to claims affecting the freedom of expression.

3. English High Court Refuses Interim Order Barring Similar Art Work on CD Covers

The claimants in GMG Radio Holdings Ltd & Ors v Tokyo Project Ltd & Anor argued that the art covers on CD compilations created by the same artist were confusingly similar and applied for an injunction based on a claim for passing off.

4. Online Management of Music rights: the Commission’s Recommendation

The European Commission, in its recommendation on collective cross-border management of copyright and related rights for legitimate online music services, has offered guidelines to Member States on how to shape further legislative initiatives at the local level in order to enhance the provision of music products on the internet. The Recommendation is a compromise between the calls for an innovative legal instrument and the need to maintain stability within the working rules of collective management.

Patents

5. Obviousness – Conflicts Between EPO and UK Approach

In October at first instance in the UK Patents Court, Mr Justice Pumfrey handed down his judgment in a case which highlights the different approaches of the European Patent Office and UK law in approaching the question of obviousness in patents. Whilst Justice Pumfrey did not go so far as to say that there was a conflict between the approaches, the case nevertheless provides ammunition to critics of the EPO formulaic approach to obviousness.

6. London Search Facility of the UK Patent Office Merges with the British Library

The British Library has merged with the London Search Facility of the Patent Office to become the entrepreneurs’ chief information source on intellectual property. This has created a superior service in the United Kingdom for comprehensive database searching of patents, trade marks and designs, as well as viewing cases, journals and specifications.The British Library has merged with the London Search Facility of the Patent Office to become the entrepreneurs’ chief information source on intellectual property. This has created a superior service in the United Kingdom for comprehensive database searching of patents, trade marks and designs, as well as viewing cases, journals and specifications.

Trademarks

7. Thomson Will Sell Without ‘Life’

The European Court of Justice decision in Medion AG v Thomson multimedia Sales Germany & Austria GmbH has interpreted Directive 89/104/EEC (to approximate the laws of Member States concerning trade marks), and provides a new approach to ascertaining the likelihood of confusion between two marks when one is a composite sign that consists of a company’s name, and the other a registered mark belonging to a third party and used to sell identical products.

8. Eden Sarl v OHIM

On 27 October 2005, the Court of First Instance delivered its judgment in Eden Sarl v OHIM. It dismissed an attempt to register a trade mark for the smell of ripe strawberries on grounds of lack of graphic representation.

9. Vodafone Launches in Romania Following Trade Mark Dispute

Vodafone, the British mobile telephone service provider, has launched its first service in Romania. The launch follows a legal dispute with a rival telephone company which held a long-standing registration of the VODAFONE trade mark in Romania.


Acknowledgements

McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Professor Michael Blakeney, Angel Adrian, Luca Escoffier, Maria Mercedes Frabboni, Jerry Hsiao, Malcolm Langley, Tina Loverdou, James Mitchiner, Rajesh Sagar, Ken Shao, Ilanah Simon, Pekka Valo and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.